International Biomedical

Trademark Trial and Appeal Board

Nov 9, 2017

No. 86866741 (T.T.A.B. Nov. 9, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 9, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re International Biomedical
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Serial No. 86866741
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Charles E. Graves of Charles E. Graves Assoc., PC
for International Biomedical.

Douglas M. Lee, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Kuhlke, Kuczma and Heasley, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
International Biomedical (Applicant), a limited liability company, seeks
registration on the Principal Register of the standard character mark NUBORNE
for “Warming device for stabilizing infant body temperature for medical purposes,”
in International Class 10.1

1 Application Serial No. 86866741, filed on January 6, 2016, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
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The Trademark Examining Attorney has refused registration of Applicant’s
mark on the ground that NUBORNE is merely descriptive of Applicant’s goods
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
When the refusal was made final, Applicant appealed. The Examining Attorney
and Applicant filed briefs. We affirm the refusal to register.
Mere Descriptiveness
A mark is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it immediately conveys information of a quality,
feature, function, or characteristic of the goods or services in connection with which
it is used, or intended to be used. In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also In re TriVita, Inc., 783 F.3d
872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). The determination of whether a mark
is merely descriptive must be made “in relation to the goods [or services] for which
registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods [or
services] because of the manner of its use or intended use.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). It is not
necessary, in order to find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a “single feature or attribute”
of the goods or services. Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
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As a preliminary matter, the Examining Attorney’s objection to new evidence in
the form of hyperlinks to various websites attached to Applicant’s brief is granted.
Trademark Rule § 2.142(d), 37 C.F.R. § 2.142(d) (“[e]vidence should not be filed with
the Board after the filing of a notice of appeal”); In re Fiat Grp. Mktg. & Corp.
Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014). See also In re HSB
Solomon Associates LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (Board will not
utilize web address to access site and consider whatever content appears).
The Examining Attorney asserts that the proposed mark “‘NUBORNE’ is
phonetically equivalent to the word ‘NEWBORN’. As such, the propose[d] mark
merely describes the intended users of applicant’s goods, namely, warming device
for stabilizing the body temperature of newborn infants.” 6 TTABVUE 12.
In support of his position, the Examining Attorney relies on various website
excerpts, including online dictionaries, noting “nu” is pronounced “new” and “borne”
is pronounced “born.” See, e.g., April 1, 2016 Office Action at 2-6 (www.merriam-
webster.com/dictionary/borne); id. at 16-17 (https//en.wikitionary.org/wiki/nu).
The Examining Attorney next points to the the defintion of the term “newborn”
as “a newborn infant.” See, e.g., December 14, 2016 Office Action at 8
(www.thefreedictionary.com/newborn). Finally, the Examining Attorney submits
website excerpts showing “that warming devices for stabilizing infant body
temperature or ‘infant warmers’ are used for stabilizing or regulating body
temperature in newborn infants,” 6 TTABVUE 7, as shown below:
Hypothermia occurs commonly in newborn infants … It is
vital to keep newborn babies warm and help them to
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achieve thermoregulation in order to prevent morbidities
and minimize the morbidities and mortality associated
with hypothermia. Radiant warmers and incubators are
some of the heating devices used for this purpose.;2
In the United States, we rarely worry about newborn
babies getting dangerously cold, but in poorer countries
the basic provision of warmth can be extremely
challenging. … The playing field may soon get more level,
thanks to a device Boston Children’s Hospital’s Anne
Hansen, MD, MPH, has been developing with
collaborators at Lawrence Berkeley National Laboratory’s
Institute for Globally Transformative Technology (LIGTT)
... . That device is a warming pad that can keep a newborn
warm for hours at a time with no electricity, and which
can be used in a home, clinic, hospital or transport
setting.;3 and
KOALA ∆T Infant Warmer is an affordable “go green”
alternative to radiant warmers and disposable heated gel
pads with controllable temperatures. … As it warms from
underneath, KOALA allows complete infant access with
no transfer of heat to clinicians, as commonly occurs with
a radiant warmer. … KOALA ∆T Infant Warmer utilizes
a reusable thermal mattress, providing savings in the cost
of disposable thermal gel pads, storage of these pads, and
waste disposal. … Newborn Nursery – Warms without
overheating, utilizing less energy than a radiant warmer.4
There is no question that the proposed mark “NUBORNE” is the phonetic
equivalent of the word “NEWBORN.” In fact, Applicant concedes this point. 4
TTABVUE 3 n.1 (“Appellant concedes the phonetic equivalences of NuBorne but
does not even in part predicate its argument that NuBorne is not ‘merely
descriptive’ based on phonetic distances from similar terms in the art.”) It is well

2 December 14, 2016 Office Action at 14-16 (website of the World Health Organization
Reproductive Health Library).
3 December 14, 2016 Office Action at 17-20 (website for Boston Children’s Hospital).
4 December 14, 2016 Office Action at 23-25 (website for NOVAMEDUSA provider of infant
warmers).
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established that a novel spelling or an intentional misspelling that is the phonetic
equivalent of a merely descriptive word or term is also merely descriptive if
purchasers would perceive the different spelling as the equivalent of the descriptive
word or term. In re ING Direct Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011)
(PERSON2PERSON PAYMENT generic for direct electronic funds transfers); In re
Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding URBANHOUZING, in
standard character form, would be perceived by consumers as the equivalent of the
descriptive term URBAN HOUSING, rather than as including the separate word
ZING); In re Ginc UK Ltd., 90 USPQ2d 1472, 1475 (TTAB 2007) (“The generic
meaning of ‘togs’ not overcome by the misspelling of the term as TOGGS. . .”); and
In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) (holding MINERAL-LYX
generic for mineral licks for feeding livestock); see also In re Quik-Print Copy Shop,
Inc, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK in QUIK-PRINT
phonetic equivalent for “QUICK”); In re Hercules Fasteners, Inc., 203 F.2d 753, 97
USPQ 355 (CCPA 1953) (FASTIE merely descriptive of tube sealing machines).
This record clearly shows that “NUBORNE” immediately, without doubt,
describes a feature of the goods, namely, that they are designed for care of
newborns. A mark that describes intended users of a product is merely descriptive.
See In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely
descriptive of risk management services in the field of pricing and purchasing
natural gas); Hunter Publ’g Co. v. Caulfield Publ’g Ltd., 1 USPQ2d 1996 (TTAB
1986) (SYSTEMS USER found merely descriptive of a trade journal directed toward
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users of large data processing systems; evidence sufficient to establish
distinctiveness under §2(f)); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB
1984) (MOUNTAIN CAMPER held merely descriptive of retail mail-order services
in the field of outdoor equipment and apparel). Even if we considered only medical
personnel as the “users,” NUBORNE is merely descriptive of the purpose of the
goods in that they are designed for use with newborns.
As noted above, in our analysis of the proposed term NUBORNE we must
consider “the context in which it is being used, and the possible significance that the
term would have to the average purchaser of the goods because of the manner of its
use or intended use.” Chamber of Commerce of the U.S., 102 USPQ2d at 1219.
Applicant’s argument that the word “newborn” has relevance and meaning to other
products is not persuasive, as we must consider the perception of the consumers,
who know what Applicant’s goods are. That is the context in which we determine
the meaning of NUBORNE: in relation to a “Warming device for stabilizing infant
body temperature for medical purposes.” In re Franklin Cnty. Historical Soc’y, 104
USPQ2d 1085, 1087 (TTAB 2012) (the fact that “a term may have other meanings
in different contexts is not controlling.”); see also In re RiseSmart Inc., 104 USPQ2d
1931, 1933 (TTAB 2012); In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984).
Finally, Applicant asserts that it is not aware of any other sellers using the term
NUBORNE. The fact that an applicant may be the first or only user of a merely
descriptive term does not obviate the refusal. In re Carlson, 91 USPQ2d 1198, 1203
(TTAB 2009) (competitor need is not the test for descriptiveness); see also In re
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Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); In re Sun Microsystems
Inc., 59 USPQ2d 1084, 1086 (TTAB 2001); In re Nat’l Shooting Sports Found., Inc.,
219 USPQ 1018, 1020 (TTAB 1983).
In the context of these goods, “Warming device for stabilizing infant body
temperature for medical purposes,” the meaning of NUBORNE is clear: the
warming device is for newborns.
Decision: The refusal to register Applicant’s mark NUBORNE as merely
descriptive under Section 2(e)(1) is affirmed.